To: | American Crafts, L.C. (ipmail@djplaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88223916 - PUNCH BOARD - 41719-1208US |
Sent: | 5/13/2019 12:10:24 PM |
Sent As: | ECOM127@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88223916
MARK: PUNCH BOARD
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CORRESPONDENT ADDRESS: INTELLECTUAL PROPERTY LAW GROUP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: American Crafts, L.C.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/13/2019
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s).
Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated March 11, 2019. The issue(s) raised in the previous March 11, 2019 Office action is/are as follow and is/are maintained: Identification Requirement.
Further, the following requirement has been satisfied: Disclaimer Requirement. See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
· Section 2(e)(1) Refusal – Merely Descriptive
· Advisory: Supplemental Register
· Identification Requirement
Applicant must respond to all issues raised in this Office action and the previous March 11, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant’s applied-for mark is PUNCH BOARD for “Punching dies; hand tools, namely, dies” in International Class 8, and “Paper cutters for home use; paper trimmers for home use” in International Class 16.
The attached evidence from Webster’s Dictionary shows that the term “BOARD” means “a flat usually rectangular piece of material designed for a special purpose.” Applicant’s specimen demonstrates that applicant’s goods consist of a flat rectangular piece of material, in the nature of a board. Furthermore, applicant’s Identification indicates that the goods are used for cutting paper. Thus, the wording “PUNCH BOARD” is merely descriptive of the function of applicant’s goods, namely, flat rectangular pieces of material used for punching paper.
Based on the evidence and the analysis above, applicant’s applied-for mark is merely descriptive and must be refused under Section 2(e)(1) of the Lanham Act.
ADVISORY: SUPPLEMENTAL REGISTER
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Applicant should note the additional requirements, set forth below. If applicant chooses to respond to the refusal above, applicant must also respond to these requirements.
IDENTIFICATION REQUIREMENT
Applicant has identified the following goods and/or services:
International Class 8: “Punching dies; hand tools, namely, dies”
International Class 16: “Paper cutters for home use; paper trimmers for home use”
The amendment to the wording “dies” in the identification is not acceptable because it exceeds the scope of the identification in the original application. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07. Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Specifically, applicant does not limit the function of the dies to paper.
If accurate, applicant may adopt the suggestion below, which reflects all of the necessary changes discussed above and shows added or amended language in bold for clarity:
International Class 8: “Punching dies for cutting paper; hand tools, namely, dies for cutting paper”
International Class 16: “Paper cutters for home use; paper trimmers for home use”
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
Mischler, Megan
/Megan Mischler/
Trademark Examining Attorney
Law Office 127
(571) 272-9997
megan.mischler@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.